In Brigham and Women’s Hospital Inc., et al. v. Teva Pharmaceuticals USA, Inc., et al., C.A. 08-464 (D. Del. Mar. 31, 2010), Judge Bartle considered whether the attorney-client privilege was waived by plaintiffs when answering certain of defendants’ interrogatories relating to defendants’ inequitable conduct counterclaims. Id. at 4-5. When answering the interrogatories, plaintiffs indicated that they relied on advice of counsel to determine what material was disclosed to the patent office during prosecution of the patents in question. Id. at 5-8. Defendants argued that plaintiffs “relied on advice of counsel as a ‘sword’ to defeat the intent prong of inequitable conduct[,]” but were also “improperly attempting to use attorney-client privilege as a ‘shield’ to deflect inquiry into [related] communications.” Id. at 8-9.
Judge Bartle first determined that Federal Circuit law on attorney-client privilege applied, rather than Third Circuit law, because the privilege issue was “closely related to the substantive issue of inequitable conduct[,]” which is within the realm of the Federal Circuit. Id. at 9-10. Although the Federal Circuit has not decided the issue of waiver in the context of the use of advice of counsel as a defense to inequitable conduct, Judge Bartle looked to cases involving willful infringement. Id. at 11. In the willful infringement context, the Federal Circuit has clearly established, “that a litigant who asserts reliance of the advice of counsel as a defense waives the attorney-client privilege with regard to all communications pertaining to that advice.” Id. at 12. Likewise, Judge Bartle determined that reliance on advice of counsel as a defense to inequitable conduct results in waiver of the attorney-client privilege as to communications between lawyer and client relating to plaintiffs’ failure to disclose certain information to the patent office. Id. at 16.